SPEEDING UP THE PATENT

PROCESS

OCTOBER 31, 2018

OUTLINE OF WEBINAR

• What is PPH

• Different types of PPH

• Which countries we have found PPH to work in

• Formalities that are required for the PPH request

• Pitfalls

PATENT PROSECUTION HIGHWAY (PPH)

• PPH is when an earlier result from a patent office is used in another patent office to speed up examination. A PPH request can be based on any positive result from another patent office.

For example:– Notice of grant, or granted patent

– Positive examination report stating that a set of claims are patentable

– A search report with only A documents and a positive written search opinion

– A search report with only A documents

• A national/regional patent office will often do a search and examination even if there is a PPH request and earlier searches and examinations by other national or regional offices.

• And, the decision about whether to grant a patent remains under the control of the national or regional Offices.

PATENT PROSECUTION HIGHWAY (PPH)

DIFFERENT TYPES OF PPH AGREEMENT

IP5

PPH

EPO welcomes Brazil

into family of Patent

Prosecution Highway

(PPH) partner offices

Various bilateral

agreements

PCT-PPH

Global

PPH

PCT-PPH

• Various bilateral agreements under the umbrella

• Enables patent applicants to request accelerated processing in the national phase, where there is a positive ISR or IPER

• You can find more info here: https://www.jpo.go.jp/torikumi_e/t_torikumi_e/guideline_e.htm

GLOBAL PPH

• Includes: AU, CA, RU, JP, KR, US, UK.

• Under the Global Patent Prosecution Highway (Global PPH) pilot, a request for accelerated processing can be made at any participating office based on work products, including PCT work products, from any one of the other participating offices under unified criteria.

• You can find more info here: https://www.jpo.go.jp/ppph-portal/globalpph.htm

IP5 PPH

• EPO, JPO, KIPO, SIPO and USPTO

• Under the IP5 PPH pilot programme a PPH request can be based

• either on the latest PCT work product (written opinion of the ISA (WO-ISA) or international preliminary examination report (IPER)) established by one of the IP5 Offices as ISA or IPEA,

• or on the national work product established during the processing of a national application or a PCT application that has entered the national phase before one of the IP5 Offices,

• You can find more info here: https://www.fiveipoffices.org/activities/ws/ip5pph.html

OUR PERSONAL EXPERIENCES

USE OF PPH IN EUROPE

• In Norway, oil and gas industry, based on GB, EP, or USA– Norway is notoriously slow, about eight years to first combined

search and examination report.

– Using PPH in Norway is clearly faster and reduces costs.

– By requesting PPH you can basically decide when your application grants and basically receiving an intention to grant as a next step (reducing costs).

• In Finland, mechanical, based on Japan– The complete search, examination, and grant at the Finnish Patent

Office was done within 10 working days. (Fastest ever?! :-)

• In a normal PPH request you still have to amend the application to comply with national requirements (e.g. writing “characterised by” in bold, only one product claim and only one method claim, etc.)

WHAT ARE THE FORMALITIES INVOLVED?

• You normally have to request PPH BEFORE the first office action issues, normally BEFORE examination starts

• You will have to supply a copy of the allowed/granted claims

• You may need to supply a translation of the claims

• You might also need to supply a copy of any search reports/office actions and translations of these if not publically accessible

• A claims translation table or a letter saying the claims correspond to those granted

PITFALLS……

• Not many, because normally a patent office is very much in favour of using PPH, especially if they note that the previous search and examination is well made. It makes life easier for ALL parties involved.

• Some people believe that if PPH is used that the patent application will get automatically granted, this is not correct and the application is still subject to normal search and examination at the patent office with the normal grant/refusal.

• But watch out if the claims you are basing PPH on are not all the protection you need as some countries can be problematic for filing divisionals

THANKS TO THE

AUDIENCE!